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THE LAW AND PEACTICE 




CONCERNING 



PATENTS k TRADE-MARKS 



(AMERICAN AND FOREIGN) 

A 

DIGEST OF PEAOTIOAL KNOWLEDGE FOR THE 
INVENTOR, PATENTEE AN^ PEOJEOTOR, 

BY 

JAMES A. WHITNEY, 

Attorney and Coinisellor-at-Law , 
Solicitor of U. S. and Foreign Patents and Trade-Marks, 

President of the New York Academy of the Useful Arts, Professor of Agricul- 
tural Chemistry of the American Institute, Member of the London 
Society of Arts, Corresponding Member Asociedade Auxil- 
iadora Industria Nacional of Rio Janeiro, Late 
Editor of the American Artisan, etc. , etc. 



SECOND EDITION 



NEW YOIMv : 

John Polhemus, Printer, 102 Nassau Street. 



/ 



\ 



index: 




Page. 

Applications for Patents 9 

Arguments in Rejected Cases. 11 

Assignments and Licenses 23 

Austi'O-Hungarian Patents 16 

Anstro-Hungarian Trade-marks 19 

Belgian Patents 14 

Belgian Trade-marks 18 

British Patents 14 

British Trade-marks 19 

British Colonial Patents 16 

Canadian Patents 13 

Canadian Trade-marks 18 

Caveats 7 

CopjTights 22 

Courts, Decisions of 24 

Courts, Testifying before the 

Cuban Patents 16 

Danish Patents 15 

Design Patents , 8 

Expense of Securing a Patent 6 

Expert, Business of an 

Examinations, Preliminary 6 

Examination of Patents . ." 19 

Examination of Questions of Infringe- 
ment r.. 19 

Filing Applications, Proceedings Subse- 
quent to 6 

Foreign Patents 13 

Foreign Trade-marks 18 

French Patents 14 

French Trade-marks 19 

German Patents 32 

German Trade-marks . . . .' 19 

Information Gratis 

Inventors, Opinions of 4. 

7. 9, 17, 18, 26, 27. 29, 30, 31, 32 

Inventions, Patentability of 6 

Infringement, Concerning Alleged 

Infringement, What Con'stitutes 21 

Italian Patents 14 

Interferences 30 

Investigation in Patent and Industrial 
Eecords 



Licenses, Assignments, etc. 
Models. Construction of 



23 
22 



Page. 

Norwegian Patents 15 

Novelty, What Constitutes Patentable . . 10 

Patents, Duties of a Solicitor of 1 

Patentability of Inventions 6 

Patents, Who may Secure 5 

Patents, U. S., Expense of Securing 6 

Patents, Design. 8 

Patent Practice 28 

Patent, How to Apply for a 9 

Patents, Foreign 13 

" Foreign, Value of 27 

" in Austria and Hungary 16 

" in Belgium .". 14 

" in British Colonies. 16 

" in Canada 13 

" in Cuba 16 

" in Denmark 15 

" in France 14 

" in Germany 32 

" in Great Britain 14 

" in Italy 14 

" in Norwaj' 15 

" in Portugal 16 

•' in Russia 15 

" in Spain 16 

■' in South America 16 

' ' in Sweden 15 

" in Ignited States 

Patents, Examination of 10 

Portuguese Patents 16 

Press, Opinions of the 4, 

5, 8, 9, 10, 20, 25 

Rejected Cases 7 

Reminiscence, A Personal 25 

Russian Patents 15 

Eussian Trade-marks 19 

Spanish Patents 16 

South American Patents 16 

Swedish Patents 15 

Trade-marks, U. S 17 

" in Austria and Hungary. . 18 

' ' in Belgium 18 

" in Canada 18 

" in France 19 

" in Germany 19 

in Great Britain 19 

in Russia 19 

TJnited States Patents 

United States Trade-marks 



Entered, according to Act of Congress, in the year 1873, by James A. Whitnet. 



SECOND EDITION 



Copyright 1877, 
By James A. Whitney. 



//. 




THE LAW AND PKACTICE CONCEENING 
PATENTS AND TKADE-MARKS. 



The condensed "Digest of Practical Knowledge for In 
ventors, Patentees and Projectors," issued by us a few years 
since, and entitled " The Law and Practice cojS^CERNrisrG 
Patents and Trade-Marks," having been for some time out 
of print, we reproduce it, enlarged and revised. The reprint, 
however, is verbatim, except where changes in the practice 
have rendered it necessary to change the text to conform to 
present usage, so that the publication holds true in every par- 
ticular, as applied to this present year. 



THE DUTIES OF A PATENT SOLICITOR. 

To secure a patent, the inventor, in addition to a model, must furnish 
the Patent Office with drawings so carefully prepared that they may he 
copied without trouble by photo-lithography ; a full description or speci- 
fication ; an exact statement of what is claimed as new ; a petition ; and 
an affidavit that he believes himself the original and first inventor. A 
patent will be granted upon a new and useful machine, process, compound, 
article of manufacture or design, but in any case, the conditions above- 
named must be fulfilled to the very letter, or the application will be re- 
jected. Even after the patent is issued, if the specification is insufficient, 
or the claims are not broad enough to cover the entire invention, the pat- 
entee is liable to lose all or a portion of his rights should the case come into 
court in a contest with infringers. 

To prepare the application complete, in perfect conformity with the 
rules of the Patent Office, in such manner that the essential features of 
the invention shall be made sharply prominent and their novelty evident, 
and with such carefulness that the patent when granted will bear any 
amount of legal fence and quibbling without breaking down — this and 
nothing less comprises the duties of the patent solicitor who understands 
his business and attends to it. 

The importance of having an application properly prepared in the first 
instance cannot, indeed, be overrated ; hence arises the desirability of 
counsel thoroughly qualified to properly conduct the case. Concerning 
the choice of a solicitor, the Commissioner of Patents speaks in emphatic 
terms as follows :* 

" The value of their services will be proportioned to their skill and hon- 
esty ; so many persons have entered this profession of late years without 



♦Rules of Practice in the United States Patent Oftico, paragTaj)h 1:U, piu^c :i(). 



4 

experience that too much care cannot be exercised in the selection of a 
competent man." 

The undersigned, while with the firm of Brown, Coombs & Co., dis- 
solved some years ago, prepared nearly one tJvousand specifications of 
patents, and, having subsequently been for more than four years editor of 
the American Artisan, was brought into daily contact and sympathy with 
inventors, and kept well versed in patent practice. During a number of 
years past, in business on his own account, he has cause for congratulation 
in the success which has attended his efforts — a result due in no small de- 
gree to his rule, rigidly followed, of giving personal and 'particular attention 
to each and every case placed in his hands, from the time of its receipt 
until finally acted upon by the Patent Ofiice. Without reflection upon 
those agents who prefer a course different from this, he is convinced that 
hundreds of applications for patents on valuable inventions are annually 
lost from the too common practice of having cases drawn originally by one 
person, and amendments, arguments, etc., prepared by another having no 
previous knowledge of the matter. Each case should receive throughout 
the special attention of some one person from the beginning to the end of 
the proceedings, and that person should be none other than the solicitor 
whose skill and reputation are virtually pledged to the inventor's interests. 

Address 

JAMES A. WHITNEY, 

212 Broadway, 
New York City. 

The owner of an invention, worth, it may be, thousands of dollars, 
should exercise the strictest scrutiny as to whether the solicitor to whom he 
confides his interests is competent and reliable. In forming a judgment in 
such a case, the experience of others is frequently of both interest and 
value. 

" James A. Wliitney : 

"Dear Sir: Within the last eight months, I have confided to your 
charge nine applications for patents on Electric Railway Signals, including 
seven American cases, one British, and one Canadian. These were all 
heavy cases, demanding in their preparation a high grade of scientific 
knowledge as well as legal ability. The fact that I am committing my 
entire American and foreign patent business to your hands is the highest 
practical illustration of my confidence in your ability and integrity as a 
patent agent, and as such I take pleasure in recommending you to the con- 
fidence of those who have patent business to be transacted. 

"I cannot too highly commend the course which you pursue in giving 
personal attention to the preparation of cases, and more especially their 
subsequent prosecutionief ore the Patent Office. 

" I wish you immediately, if possible, to undertake- some important ex- 
pert business for our Company. 

" Yours very truly, 

" Wm. Robixson, 
" Gen'l Manager BoUnson Electric Railway Signal Co." 

New York, March 3, 1873. 

[From the Horticulturist, New York, July, 1872.] 

" Prof. James A. Whitney, the former editor of the American Artisan, 
New York, and President of one of our most influential scientific and en- 
gineering societies, has engaged in the business of patent agent and 
expert. His editorial position, acquaintance, and research have made 
him intimately familiar with the principles and details of patent cases, and 
he possesses a right degree of skilled ability for the examination of patents, 
their successful negotiation and the preparation of all needful papers for 



invention. Mr. Whitney's experience of over twelve years in this class of 
scientific labor, together with a penchant for scientific and mechanical 
pursuits, have developed into accomplishments of practical merit. Those 
who wish to take out patents, or examine patent cases, or wish judicious 
information upon patent business, will do well to consult him. " 

WHO MAY SECURE PATENTS. 

The original and first discoverer of any new and useful art, machine, 
manufacture, or composition of matter, or any new and useful improve- 
ment thereof, whether he be citizen or alien, is entitled to letters-patent 
thereon, provided that it has not before the date of his inmntion been in- 
vented by others in this country, or patented or described in a printed 
publication in this or some other country; also provided it has not been 
once abandoned to the public or on sale for more than two years previous 
to filing the application for protection. But a patent will not be refused 
merely because the invention or discovery, in whole or in part, has been 
known and used abroad before the date of the applicant's invention, un- 
less it has been patented or described in some printed publication. 

What in the eye of the law constitutes a completed invention or dis- 
covery is a matter of grave consequence to inventors, because proof of 
priority of invention in case of interference, etc., frequently hinges di- 
rectly upon it. The query is definitely answered by the following from 
the "Patent Office Rules of Practice": 

' ' Merely conceiving the idea of an improvement or machine is not an in- 
vention or discovery. The invention must have been reduced to a practi- 
cal form, either by the construction of the machine itself or of a model 
thereof, or by making a drawing of it, or by such a disclosure of its exact 
character that a mechanic, or one skilled in the art to which it relates, can 
and does, from the description given, construct the improvement or a model 
thereof, before it will prevent a subsequent invention from obtaining a 
patent." 

On this subject, furthermore, George Ticknor Curtis, in his "Treatise 
on the Law of Patents," has the following, showing how essential it is that 
in order to prevent anticipation in securing valid patents, inventions should 
be wrought into practical shape at as early a date as possible: 

"It is not sufficient, to defeat a patent already issued, that another 
person has conceived the possibility of effecting what the patentee has 
actually accomplished. To constitute a prior invention, the party alleged 
to have made it must have proceeded so far as to entitle himself to a 
patent, in case he had made an application ; or, in other words, he must 
have reduced the idea to practice, and embodied it in some distinct form. 
It is true that, in a race of diligence between two independent inventors, 
our law provides for the priority of conception by allowing the one who 
first invents to obtain the i:)atent, if he was using reasonable diligence in 
adapting and perfecting his invention, although a second inventor has, 
in fact, first perfected the invention and reduced it to practice. But where 
a patent has been granted to a patentee who did not surreptitiously obtain 
his knowledge from a prior inventor who was using reasonable diligence to 
perfect and adopt the invention, in order to defeat it on the ground that 
the patentee was not the first inventor, some previous inventor must not 
only have the idea, but must also have carried the idea into practical o]ic- 
ration; for he is entitled to a patent who has first perfected and adapted 
the invention to practical use." 

PER SON Al.. 

[^From the Chicago Railway Ileirieio, August, 1872.] 

"Mr. James A. Whitney, recently editor of the American Artimn. and 
now President of the New York Society of PracHcal Engineering, has 
opened an office in New York C/ity as solicitor of patents and expert in 



patent cases. ^Ir. 'Wliitncy, in addition to his just claims, scientifically^ 
as a member of the profession of civil engineering, is eminently a practical 
engineer. There are few branches of practical engineering which he 
has not merely mastered in the books, but familiarized himself with by ob- 
servation and experience. He is conversant with the engineering sciences 
not only in the abstract, but as applied in shops, structures, and mines, and 
in the manifold forms and agencies of transportation. As respects, there- 
fore, the practical adaptation to its proposed end of any new machine or 
process, his judgment is at once that of the savant and the expert. He 
has acquired the practice as well as mastered the theory of the manufac- 
turing arts. These considerations lead us, quite unsolicited from any quar- 
ter, to heartily commend Professor Whitney to an even wider acquaint- 
anceship among the field of inventors, and especially to suggest to those 
having untried devices of any kind to avail themselves of his very varied 
and accurate knowledge of what has been done in that particular direction, 
and of the truest adaptation of means to that end. There would be a vast 
economy of thought, labor, time and money, if inventors — the most of 
whom have at first little knowledge of what has been done or attempted 
in their specialty — could avail themselves of the suggestions and advice of 
men accomplished in the history and skilled in the details of mechanical 
improvements — men honest and unselfish, and equally above fear and 
favor. Such we know Mr. Whitney to be ; and, in commending him to 
our readers, we have felt that we could do no less than express the grounds 
of a confidence which is the result of an intimate professional and personal 
acquaintance. " 

PATENTABILITY OF rXVE:J^TI0NS. 

An inventor naturally desires to know beforehand, as nearly as possible, 
whether his invention is new, and whether he can obtain a patent upon it. 
Of late years, the number of patented inventions has so wonderfully in- 
creased that the only certain mode of ascertaining this is to make the ap- 
plication, and await the result. But there are some classes of improve- 
ments in which so little has been accomplished that an expert can, of his 
own knowledge, give a pretty correct opinion. For this no charge is made. 
In others, a preliminary examination at the United States Patent Office 
and in the patent records of England will show whether the invention has 
been previously patented in the countries named. This examination is 
only advisable when the cost of models and other essentials in the prepa- 
ration of the case is very great, and a strong assurance of success is, very 
properly, desired before venturing upon unusual expense. Such a search, 
to le of any wlue, involves much labor. A mere glance at the models in 
the Patent Office is practically of no account. The fee for such a search 
is twenty -five dollars ancj upward. 

THE EXPENSE OP SECURING A PATENT. 

The first installment of the Government fee is fifteen dollars ; the agency 
fee for preparing the case complete is from thirty dollars for the most 
simple cases to forty and fifty dollars and upward, in proportion to the 
labor involved. When the patent is allowed, a final Government fee of 
twenty dollars is due before it can issue. A period of six months is per- 
mitted for the payment of this final fee. The inventor can obtain copies of 
his patent for twenty-five cents per single copy, or one dollar for ten. 

PROCEEDINGS SUBSEQUENT TO FILING APPLICATIONS. 

In very many instances, the work of the patent solicitor has only com- 
menced when the application is filed. Sometimes, when an application is 
brought up for examination in the Patent Office, the examiner in charge 
objects to a claim, or refers to some previous invention as partly anticipating 



it; in such instances, the undersigned personally investigates the entire 
case without extra charge, and secures for his client the very best claim 
possible. If the examiner rejects the claim, the inventor is promptly noti- 
fied, and an opinion — also without charge — is given as to the probability 
of obtaining the claim by appeal to the Examiners-in-chief. For this 
appeal the Government fee is ten dollars ; the agency fees are proportioned 
to the labor involved. In the event of a rejection by the Examiners-in- 
chief, a second appeal may be had to the Commissioner of Patents, and 
after this, as a final resort, to the Supreme Court of the District of Columbia, 

March 3, 1873. 
James A. Whitney, Esq. : 

Dear Sir: Your favor^notifying us of 'the allowance of our application 
for a patent on turpentine filter is just at hand. We had begun to despair 
of this case, as it had been previously rejected in toto when a patent for it 

was applied for through the agency of . You have succeeded 

admirably, for which receive our thanks. 

Respectfully, 

F. G. Richardson. 
107 John Street, New York. per F. J. Richardson. 

REJECTED cases, ETC., ETC. 

Particular attention is given by the undersigned to rejected and defect- 
ive cases, reissues, interferences, disclaimers, and cases that have lapsed 
for non-payment of the final Government fee. Every matter of this kind 
must be judged upon its own particular merits. In writing for informa- 
tion, please state in full the essential features of the case. For an opinion 
based on such statement, the fee is five dollars, which should be inclosed 
with the statement. The agency fee for undertaking cases of the classes 
indicated is a matter of special arrangement, but will always be reasonable 
and proportioned to the work involved. A reissue should be applied for 
in all cases where the claim is believed to cover less than the actual inven- 
tion ; or where, from any defect or irregularity, there may be doubts of the 
entire validity of the patent. Many of the most valuable patents in exist- 
ence have been made so by reissues, whereas, in their original form, they 
would have been comparatively worthless. When a patent covers several 
distinct features that are capable of separate use, or are liable to be sepa- 
rately infringed, it is frequently advisable to have the original patent 
reissued in several subdivisions, a separate patent on each distinct portion 
of the improvement. The famous McCormick patent on harvesters was 
reissued in no less than ten separate patents. By this means a suit can be 
brought for infringement on one feature of the original invention, without 
bringing the others into court. 

When it is found that the claim of a patent embraces more than the 
patentee is legally entitled to, the error can be cured by filing a disclaimer 
of the parts that should not be included. 

CAVEATS. 

The following from the rules and practice established by the Patent Office 
indicates the scope and nature of caveats : ' ' Any citizen of the United States, 
or alien who has resided for one year last past in the United Stjites, and has 
made oath of his intention to become a citizen thereof, can file a caveat in the 
secret archives of the Patent Office on the payment of a foe of ten dollars 
therefor. And if at any time, within one year thereafter, anotlier person ap- 
plies for a patent with which such caveat w^ould in any ninnner intertVre. 
such application will be suspended, and notice thereof will be sent to Ihe 
person filing the caveat, who, if he shall lile a complete a]>pli('ation within 
the prescribed time, will be entitled to an interference with the previous 



8 

application, for the purpose of proving priority of invention, and obtaining 
the patent, if he be adjudged the prior inventor. The caveator, if he v^^ould 
avail himself of his caveat, must file his application within three months 
from the day on which the notice to him is deposited in the Post Oflfice at 
Washington, adding the regular time for the transmission of the same to 
him ; and the day when the time for filing expires will be mentioned in the 
notice or endorsed thereon. The caveator will not be entitled to notice of 
any application pending at the time of filing his caveat, nor of any applica- 
tion filed after the expiration of one year from the date of filing the caveat; 
he ma)" renew his caveat at the end of one year by paying a second caveat 
fee of ten dollars, which will continue it in force for one year longer, and 
so on from year to year, as long as he may desire. If a caveat is not re- 
newed at the end of the year for which it was filed, it will no longer be 
regarded as in the secret archives of the office." The purpose of a caveat 
is to prevent an interloper from securing a patent while the original inventor 
is perfecting his invention and getting ready to make his application com- 
plete. A caveat accomplishes this by providing secret proof in the Patent 
Office of the date at which the inventor officiall}'' claims the essential prin- 
ciple of the improvement. Caveats should be drawn up with great care. 
Drawings must be furnished when the nature of the case admits. The 
Government fee for a caveat is ten dollars ; the agency fee from ten to 
twenty-five. Caveats can be prepared from pencil sketches and oral de- 
scriptions, no model being required. 

[From the JVbi'wich, Conn., Daily Bulletin, May 29, 1872.] 

" Of Prof. James A. Whitney we can speak from a personal acquaintance. 
He is a gentleman of high scientific attainments. Any person seeking pro- 
fessional advice from him will be certain of just and honorable treatment. 
He is incapable of practising the tricks and deceptions that inventors are 
sometimes subject to in seeking advice in New York." 

[From the Prairie Farmer, Chicago, June 1, 1872.] 

"Mr. James A. Whitney, New York, has recently opened an oflfice in 
that city for the prosecution of claims at the Patent Office, and as an expert 
in patent cases. His long experience in this field of investigation has 
rendered him familiar with the business in all its branches, and we can 
confidently recommend him to those needing his services." 

DESIGN PATEKTS, 

The law of July 8, 1870, provides that '' any person who, by his own 
industry, genius, efforts, and expense, has invented or produced anj'" new 
and original design for a manufucture, bust, statue, alto-relievo, or bas- 
relief; any new and original design for the printing of woolen, silk, cotton, 
or other fabrics ; any new and original impression, ornament, pattern, print, 
or picture, to be printed, painted, cast, or otherwise placed on or worked 
into any article of manufacture; or any new, useful, and original shape 
or configuration of any article of manufacture, the same not hav- 
ing been known or used by others before his invention or production 
thereof, or patented or described in any printed publication, may, upon 
payment of the duty required by law, and other due proceedings, had the 
same as in cases of inventions or discoveries, obtain a patent therefor." 
Also, that patents for designs may be granted for the term of three years 
and six months, or for seven years^ or for fourteen years, as the applicant 
may in his application elect. The Government fees for design patents are 
ten, fifteen, and twenty dollars respectively, according to the term of the 
patent. The agency fees are from ten to twenty dollars. 



9 

It will be seen that a design patent covers almost anything depending 
wholly upon shape or configuration. In many cases, a patent may be ob- 
tained upon an invention as a machine or article of manufacture ; and, in 
addition to this, a design patent covering its shape or conformation, a kind 
of double protection being by this means secured. 

IN OEDER TO APPLY FOR A PATENT, 

Send a substantial model (for design patents, no model is required) not 
exceeding twelve inches in any of its dimensions, together with a full de- 
scription of the construction, operation, and advantages of the invention, 
and separately by mail remittance of fifteen dollars (amount of first Gov- 
ernment fee). Prepay express charges, and write the address plainly and 
in full. As soon as the case is prepared, it will be presented for signature, 
and oath, and payment of the agency fee. The case will then be sent to 
the Patent Office, and its progress carefully attended to until final action 
is had upon it. Clients will always be kept informed of the condition of 
their applications while before the Patent Office. All communications are 
strictly private and confidential. Address 

James A. Whitney, 

Patent Agent and Expert, 

128 Broadway, New York, 

The following is from a client whose inventions relate to the important 
subject of coking the refractory lignites of the West: 

Salt Lake City, U. T., March 17, 1873. 
James A. WMtney: 

Dear Sir: Your favor of the 20th inst. is received. The intelligent, 
prompt and efficient manner in which you have attended to the business 
which I lately entrusted to you deserves my best thanks. You readily 
grasped the points, and worked them up in the shortest possible time, and 
made three applications for patents embracing distinct improvements, all 
based on leading features, all of which applications were allowed by the 
Patent Office. It is especially gratifying to me to acknowledge the pains 
you took to follow out the suggestions which I made to you, and the 
promptness with which you pushed the cases. If I should have any more 
business of this kind, I shall again apply to you, and recommend you also 
to my friends. Yours truly, 

Henry Engelmann, 

Mining Engineer. 

That below refers to improvements in sheet metal articles already ac- 
knowledged to be worth tens of thousands of dollars — a striking example 
of the value of what many would call "small improvements," but which 
are truly great in their effect upon the industries to which they relate : 

RoNDOUT, November 13, 1872. 
Mr. James A. Whitney: 

I am abundantly pleased with your success in obtaining a patent on my 
hillside plough. I recommend your agency to all inventors who want their 
cases carefully prepared and attended to. 

Thomas J. Burgess. 

{From the Methodist, New York, Jtme 1, 1872.] 

Our old editorial friend, Prof. J. A. Whilncy, late of the Artisan, has 
opened an ofiice as Solicitor of Patents, Kxpert in Patent Cases, and Me- 
chanical Engineer, l^resident of the New York Society of Practical 
Engineers, and Professor of Agricultural ('hemistry lo the Anicrican 



10 

Institute, be brings to bis business special qualifications. A solicitor of 
patents needs sucb qualifications, for it is bis function to assist inventors in 
preparing drawings and descriptions, specifying -wbat is new in tbe inven- 
tion, and seeing tliat all tbe proceedings are in accordance witb tbe law and 
routine of tbe Patent Ofiice. Prof . Wbitney bad abundant experience in 
these matters in tbe Artisan ofiice. As expert and mecbanical engineer, 
he is a capital judge of new inventions and machines, of their claims com- 
pared with old ones, their interference with patented ones, their best forms 
and proportions. We commend him heartily to inventors and others need- 
ing such services. 

{^Frmn the Iron Age, New York, June 6, 1872.] 

We are pleased to learn that Mr. James A. Whitney, for some years 
editor of our contemporary, tbe American Artisan, has established a patent 
agency, to the business of which he will hereafter give his personal and 
careful attention. Mr. Wbitney has had large experience in the prepara- 
tion of drawings and specifications for all classes of inventions, and his 
familiarity with patent records of this and other countries will prove of 
much value to his clients in making out claims likely to secure a favorable 
consideration at the Patent OflSce. We take pleasure in commending the 
new agency to the favor of inventors. 

[Fi'om Moore's Rural New Yorker, June 8, 18T2.] 

Prof. James A. Whitney has established himself as Patent Solicitor, 
Expert, and Mechanical Engineer. Mr. Whitney is qualified, by experience 
and practical knowledge, for the work specified, and is a conscientious, 
industrious gentleman, whose life and experiences have been such as to de- 
velop the fullest sympathy with men engaged in industrial pursuits, espe- 
cially inventors. 

WHAT CQjSrSTITUTES PATENTABLE NO^'ELTY. 

There are a large number of cases in which it is difiicult at the first 
glance to draw the line between "patentable novelty " and the "result 
merely of mechanical judgment;" and the greatest errors ever committed 
in the examination of applications by the Patent OflBce are made in this. 
The Office, however, is always open to argument, and commonly a just 
decision can be obtained on an application rejected as lacking in invention, 
provided the case be drawn up with due knowledge of the practical merits 
of the improvement, of the intent and meaning of our patent law, and 
of the principles established by the decisions of American and English 
courts. For instance, the mere substitution of one material for another is 
not patentable. But if, by the use of a material never before employed 
for a given purpose, a new and useful result is produced, the inventor of 
the improvement is entitled to a patent. In like manner, the mere attach- 
ment together of two machines will not suffice to support a claim; but if 
the machines are so combined that, in order to subserve any particular pur- 
pose, the operation of one is dependent upon that of the other, this 
combination is clearly patentable. It must be kept in mind that the Patent 
Office must act upon an application just as it comes before it; the Office 
cannot make or even suggest amendments. If the inventor causes his 
specification to present a false and unfavorable impression upon the ex- 
aminer, it is mainly his own fault if a decision of corresponding char- 
acter is given; even when the adverse decision is plainly and flag- 
rantly an error, the examiner is entitled by law and courtesy to argu- 
ments setting the matter in its true light. To prepare the application, in 
the first place, so that patentable novelty shall not be confounded with the 
result merely of mechanical judgment, and, in the event of a rejection, to 



11 

be able to show on legal grounds the right of his client to a patent, calls 
for'the most conscientious discharge of duty by the patent solicitor. The 
following from the records of the Patent Office gives an example of the 
class of inventions here especially considered, the legal principles which 
govern their patentability, and the nature of the arguments filed in estab- 
lishing the fact of patentability where such exists. The application referred 
to is that of Messrs. Richardson (hereinbefore mentioned) for a turpentine 
filter, and which had been totally rejected on a previous application filed 
by another agency claiming an experience in the business of more than 
twenty years. It will be noticed that the application as filed by the under- 
signed, although at first rejected, was allowed on the argument without 
changing a word of the specification or claim : 

[No. 1.] 27. U. S. Patent Office, 

Washington, D. C, Dec. 24, 1872. 

Frederick G, Richardson, Esq. , care James A. Whitney. 

No. 128 Broadway, New York City : 
Please find below a copy of communication from the examiner relative 
to your application for a patent for a turpentine filter, filed Dec. 17, 1872. 
Very respectfully, 

M. D. Leggett, 

Commissioner. 
[687.] 

There appears to be no difference between the filter as devised by appli- 
cant and the one now in common use for the same purposes as are pro- 
posed by him, with the exception that applicant has adopted a different 
quality of material than has been heretofore used ; and inasmuch as one 
quality of wire-cloth has long been used for straining turpentine, milk, 
jellies, etc., the adoption of another quality of the same material wire- 
cloth for the same purpose is a change so obvious as not to require in- 
vention, and cannot form the subject of patent. A patent is therefore re- 
fused. 

STATEMENT. 

IN THE MATTER OF FREDERICK G. RICHARDSON* S APPLICATION FOR A 
PATENT ON IMPROVEMENT IN TURPENTINE FILTER, FILED DEC. 17, 

1872. 

This invention consists in a turpentine filter constituted by the combi- 
nation of a twilled wire-cloth web with a circumferential rim, the combi- 
nation of this variety of wire-cloth with such rim having never, so far as 
known, been made previous to the invention by the applicant, and a 
material improvement in the trade having been effected by the said inven- 
tion, for the reason that, whereas turpentine filters made with ordinary or 
untwilled wire-cloth have prove too weak for continued or economical use, 
when made with the requisite fineness of mesh, because of the extreme 
fineness of the wire necessarily employed; the twilled cloth, by giving a 
fine mesh with a coarse wire, ensures both efficient operation and the re- 
quisite strength and consequent durability. The applicant, by discov- 
ering the peculiar characteristic of twilled wire-cloth with reference to the 
requisites of filtering hot turpentine and resin, and by combining the said 
material (never before used for the purpose) with a means tor its suc- 
cessful use in the industry to which it refers, has produced a new article 
of manufacture, possessing a marked mechanical ditrorcncc from all other 
devices for the same purpose, and producing greatly improved results in 
the one to which it refers. That clianges in the structure of apparatus, 
apparently very slight, may be the subject of valid patents, especially wlu^n 



12 

accompanied by greatly improved results, is an acknowledged truth both 
in Ihe jurisprudence of this and other countries. For instance, in the case 
of Kneass vs. the Schuylkill Bank (see Curtis on "Patents," 3d ed., page 
30), the substitution of steel engraving for copperplate on bank-notes was 
held to constitute a distinct and patentable improvement. 

So also: The use of a gas-jet for singeing lace, in lieu of an ordinary 
lamp-flame, producing an improved result, was held to be a patentable im- 
provement ; so also was the use of anthracite and hot-air blast in the man- 
ufacture of iron, in the place of bituminous coal and hot-air blast. (See 
Curtis, p. 41.) 

So also : In the case of an alloy previously well known, but never used 
for sheathing ships, its use for such purpose was adjudged patentable. In 
this case, the jury were charged by Chief -Justice Tindal "that the pre- 
vious existence of plates made in the proportions of metal embraced by the 
patent was immaterial, provided that they had never been applied to the 
purpose for which the patentee used the plates manufactured by him." 

I quote further the language of Curtis on this case, as having especial 
bearing upon the matter in hand. "The case," says he, "is a valuable 
illustration of the doctrine that, when the new use of a thing produces an 
important effect never before produced, or develops or makes practical 
some new property of matter not previously known, the new use is not 
analogous to the former use, and therefore the novelty of the mere agent 
is immaterial." 

The case of Newton vs. Vaucher (see Curtis, page 54) may also be cited. 
In this the use of soft metal for making steam-tight contact between mov- 
ing surfaces was held to be an invention independent of the use of the 
same agent for diminishing friction between moving surfaces. 

In view of the precedents thus established, I trust that Richardson's ap- 
plication may be reconsidered, and the claim, as originally filed, allowed. 

Respectfully submitted, 

James A. Whitney, 

Attoj'nep. 

U. S. Patent Office, 
Washington, D. C, February 24, 1873. 

Sir : Your application for a patent for an improvement in turpentine 
filters has been examined and allowed. The patent will be engrossed for 
issue on the receipt of twenty dollars, the balance of the fee payable 
thereon, if received within six months from this date. If the final fee is 
not paid within that time, the patent will be withheld, and your only relief 
will be under the provisions of section 35 of the Patent Act, approved 
July 8, 1870. 

When you send the final fee, you will also send, distinctly and plainly 
written, the name of the inventor and invention, and, if assigned, the 
names of the assignees. If you desire to have the patent issue to assignees, 
an assignment containing a request to that effect must be duly filed in this 
office on or before the date of payment of final fee. 

You are requested at the same time to notify the office how many extra 
copies of the specification and accompanying drawing, if any, you desire 
to have furnished you. These copies will be charged for at the following 
rates : single copies, uncertified, 25 cents ; twenty copies or more, 10 cents 
each. The money should accompany the order. 

Respectfully, 

M. D. Leggett, 
* Commissioner. 

F. G. Richardson, 

Care J. A. Whitney, New York City. 

[Note.— It will be seen that the above letter of allowance gives also items of information 
concerning assignments, copies of patents, etc.] 



13 



FOREIGN PATENTS. 

Of late years, the increased facility of commercial intercourse between 
nations, and the development of arts and industries in different countries, 
has greatly promoted the present and prospective value of patents where- 
evei' patent laws exist ; and a patent in any one of several foreign coun- 
tries, if properly managed, should be worth nearly or quite as much as the 
American one. This is notably true in those instances where the im- 
provement relates to something of universal use, such as an article of 
apparel, a household utensil, or an agricultural implement; or some art, 
like that of iron or steel manufacture, or the use of motive power, upon 
which great industries are founded in all civilized lands. The remark 
also holds good when the invention refers to some staple product of 
some particular region; for instance, an improvement in smelting the 
ores of mercury would be valuable in Spain and Austria; an im- 
provement in the production of wine or the manufacture of 
sulphur or straw hats in Italy ; or any improved treatment of sugar, 
coffee, or tobacco, or putting up drugs, in Brazil. As a rule, how- 
ever, it may be safely said that (our own country being so varied that al- 
most any section may have a counterpart abroad either in natural or arti- 
ficial products) an invention worth patenting at home will be worth the 
expense of patenting in one or more foreign countries. Letters-patent in 
the United States, Canada, Great Britian, France, Belgium, Italy and Rus- 
sia, secure in the aggregate a monopoly ranging from a ten years' term up- 
wards, among two hundred and thirty millions of the most active and pro- 
gressive people on the globe. It should be also borne in mind that, 
although the fees are higher for foreign than for American patents, no 
models are required; and in many cases a foreign application, if skillfully 
prepared, may be made to embrace as much as two or three, or even more 
5ire permitted to cover in this country. For most classes of American in- 
ventions, however, it is usual to secure foreign patents in England, France 
and Belgium, which have collectively a population of upwards of eiglity- 
five millions, and, with our own country, are foremost in the ready adop- 
tion of new improvements. The expense of taking out patents in these 
three countries is, for England, $300; France, $100; Belgium, $100; or a 
total of $500. These charges are in gold, and cover all expenses except 
the taxes levied at intervals during the life of the patent. 

Foreign patents require the utmost care in their preparation, as no pro- 
vision is made, as in our American law, for rectifying mistakes by reissue, 
etc. It is also desirable that the application should be made as early as 
possible ; for there are always unprincipled persons ready to seize upon a 
valuable invention as soon as it is made public here, and patent it abroad, 
in defiance of the rights of the inventor or American owner. 

CANADIAN PATENTS. 

Under the new Canadian law, patents are granted to citizens of the United 
States on the same conditions as to native Canadians. The application is 
subjected to examination in a manner analogous to that of the U. S. Patent 
Office. A patent can be obtained on an invention already patented here, 
provided the application is made within one year of the issue of the 
American Letters Patent. Patents are issued for terms of five, ten and 
fifteen years, as the applicant elects; the expenses, including government, 
agency, and incidental fees, are $75, $95 and $115 respectively. A patent 
issued for one of the shorter terms may be subsequently extendetl to the 
full term of fifteen years, if desired. It is better, however, to secure 
the long term in the first place, as each extension will cost about $50. A 
model is re(|uired, but, when preferred, this need not be furnished until 
the application is allowed. Tlirough this agency, Canadian applications. 



14 

like all other cases, home and foreign, are pushed forward with as little 
delay as possible, being commonly ready for mailing icithin fmir days of 
their entry on my books. 

BRITISH PATENTS. 

A patent in Great I^ritian includes England, Scotland, Wales, Ireland, 
the Channel Islands, and the Isle of Man. Generally any invention 
capable of successful introduction here will find a market, if managed 
rightly, among the forty millions of population of Great Britain. The 
term of the patent is fourteen years. The total cost is $300 gold. This 
may, if the applicant wish, be paid in two installments, securing "provi- 
sional protection," and the remaining $200 be paid within three and one- 
half months, to secure the sealing of the patent. It is preferable, how- 
ever, to', tile the specification complete, for the reason that the crown 
otficers have decided that such an application will take precedence, in case 
of interference, of a provisional protection on the same invention. When 
the patent is three years old, a Government tax of £50 — about $250 — is 
levied upon it ; and, at the end of the seventh year, another of £100. The 
purchaser of the patent assumes the payment of these dues. The patentee 
is not required to work his invention within any specified time in Great 
Britain. 

FREISiCH PATENTS. 

Patents are granted in France for a term of fifteen years ; the invention 
must be worked within two years of the date of the patent, and an annual 
tax of $20 must be paid. If these conditions are not complied with, the 
patent is rendered invalid. France has a population of forty millions, and 
is noted for the number and variety of her arts and industries ; but many 
of the processes are carried on by manual labor, which must eventually 
give way to ingenious machinery, of which, moreover, whether invented 
at home or abroad, French manufacturers have always shown a strong 
appreciation. A French patent costs $100 gold. 

BELGIAN PATENTS. 

Little Belgium has a population of only five millions, but is the indus- 
trial hive of Europe, and shows manufacturing systems equal to any in 
the world. To such an extent is this the case that the agents of Belgian 
houses compete for trade with English manufacturers in Birmingham and 
Shefiield itself — a result due entirely to the wise administration of an eflfi- 
cient patent law. 

The expense of a Belgian patent is $100 gold. The term of the patent 
is twenty years. There is an annual tax — $2 the first year, and increasing 
$2 annually — until the patent expires; if the tax is not paid within six 
months from the time it falls due, the patent is forfeited. 

ITALIAN PATENTS. 

In Italy patents are granted for periods ranging from one year to twenty; 
if for less than five, the invention must be worked within twelve months : 
in all other cases, within two years. The recent enlargement of the terri- 
tory held under the Italian Government has brought about seven millions 
of people under its control. Many of the arts have been in a backward 
state ; but it is probable that, under the more favorable conditions now ex- 
isting, greater progress will be made. This has of late led inventors to look 
much more favorably upon Italian patents than was formerly the case. 
The cost is $200 gold. 



15 



RUSSIAN PATENTS. 

A reliable foreign authority speaks as follo"VTS of Russian letters-patent, 
etc. : 

"The Russian Empire of eight million square miles, and eighty million 
af inhabitants, presents to patentees one of the most promising fields in the 
Old World. An active public sentiment exists in favor of new inventions 
and manufactures ; the patentee is well secured in his rights, and the policy 
recently inaugurated cannot fail to give a fresh impetus to trade, and cause 
a great demand for inventions. 

' ' The practice of the departments has been modified by a recent decree 
of the Emperor. It is stated that letters-patent will issue under this prac- 
tice several months earlier than under the old system. The field being 
unoccupied, inventors rarely find their inventions anticipated, and refusals 
are rare exceptions." 

In Russia any invention is new in the eyes of the law unless it has been 
previously publicly known in the Empire. An invention patented in any 
other country may be patented in Russia at any time during the existence 
of the foreign patent, unless the invention has been publicly worked in 
Russia. Letters-patent may also be obtained for the mere introduction or 
importation of any improvement not previously publicly in use in that 
country. 

Patents in Russia are granted for three, five, and ten years; but com- 
monly it is worth while only to secure the latter or longer term, as there is 
no provision for any extension of the original period. The cost, including 
agency fees, is, for three years, $300 ; five years, $450 ; ten years, $600. It 
is well known that American engineers and inventors have met with special 
favor in Russia. 

SWEDISH PATENTS. 

Sweden grants patents for invention and improvements to the original 
inventor only, whether a native or alien, residing or represented in the 
country. There is an examination by the Chamber of Commerce as to the 
invention being contrary to existing laws, public safety, etc., but none as 
to novelty. The term ranges from three to fifteen years, according to the 
nature and importance of the invention ; patents for foreign inventions 
not to exceed the term granted abroad. The invention must be worked 
within one, two or four years of the date of the patent, according to the 
character of the invention. Infringements are punished by fines besides 
damages. The Swedish law makes the unique provision that one-half of 
the fine and damages go to the patentee, and the other half to the poor of 
the parish. The cost of a Swedish patent, all agency fees included, is 
$180, gold. 

NORWEGIAN PATENTS. 

Patents are granted in Norway for terms not exceeding ten 3''ears, and 
the invention must be worked within two years of the date of the patent. 
The expense is $150, gold. 

DANISH PATENTS. 

In Denmark, patents are granted hy tlie crown on the recommendation 
of certain officials, and for terms extending from three to twenty years. 
The cost is $135, gold. 

NOTE. 

The throe Scandinavian countries, Sweden, Norway, and Denmark, af 
ford excellent opportunities for the Introduction of machinery and pro 



16 

cesses for iron and steel manufacture, ship-building, etc., as well as to im- 
provements relating to fisheries, wood- working, and many other industries 
largely practiced in the North of Europe. 

PORTUGUESE PATENTS. 

Patents in Portugal have a duration of five years, 'and must be worked 
within two and one-half years of the date of the grant. The total expense 
is $250,. gold. 

SPANISH AND CUBAN PATENTS. 

Spain grants patents for periods of five, ten, and fifteen years. The cost^ 
all fees included, are $250, $450, and $550 respectively, according to the 
duration of the patent applied for. 

Patents for the island of Cuba are granted separately from those of 
Spain; the duration may be for the same periods as in the last-named 
country. The cost, covering everything, is $250 for a five years' patent, $350 
for ten years, and $550 for fifteen years. 

PATENTS IN AUSTRIA AND HUNGARY. 

Austria. — This country grants exclusive privileges for new discoveries, 

inventions, or improvements to natives or foreigners residing or represent- 
ed in Austria. There is no previous examination as to novelty or utility. 
Patents are refused for preparations of food, beverages, and medicines, or 
for those that are considered objectionable on the ground of public health 
or general interest of the State. The duration of an Austrian patent is 
fifteen years at most ; but inventions brought from other countries may be 
patented for the unexpired term of the foreign patent. The invention 
must be worked within one year, and not be interrupted for two years. A 
patent of the longest term may be extended by the special grant of the 
Emperor. An Austrian patent covers both Austria and Hungary, which 
have together a population of 38,000,000. The entire cost is $150, gold; a 
tax not exceeding, during the first five years, $10 annually, must be paid. 

PATENTS IN THE BRITISH COLONIES. 

Each British colony has its own system of patent law, but in each the 
duration of the patent is fourteen years. The cost, agency fees included, 
for the Colonies of Victoria, New Australia, New South Wales, and 
Queensland, is $300 each ; for New Zealand, $200, and for British India, 
$400. In the last named, the invention must be practically introduced 
within two years. India has a population of two hundred millions of 
people. 

PATENTS IN SOUTH AMERICA. 

To secure patents in the various States of South America involves con- 
siderable trouble and expense; but there are many processes for pre- 
parirg tropical products and many kinds of machinery, especially those 
desio-ned for bringing raw material into merchantable form, that with 
energetic management could be introduced into those countries with great 
profit. South American patents are so exceptional in their character that 
special arrangements must be made in every case to protect the interests of 
the inventor. 



Office of C. T. Raynolds & Co., 106 and 108 Fulton st., } 

New York City, July 9, 1873. f 
J. A. WMtTbey, Esq.: 

Dear Sir : It is with pleasure I acknowledge the prompt and efficient 
manner in which you have conducted business for me at the United States 
Patent Office. I must also express ray special satisfaction with your manage- 
ment of my foreign business. The British and French applications were for- 
warded with the least possible dela}^, and were urged w^ith the greatest 
dispatch, and, on examining tlie documents, I find them all that could be 
desired. You have my best wishes for your continued success. 
Yours truly, L. Richardson, 

Of C. T. R. & Co. 

NOTE. 

All fees for foreign patents are payable in gold or its currency equiva- 
lent. Attention is called to the fact that in this agency applications are 
made out and forwarded without loss of time, ordinarily within four days 
of the receipt of the case, 

trade-marks. 

" Seals and emblems of ownerships were coeval with the birth of traffic," 
Pottery dug from the ruins of Assyrian cities has the imprint of the factor's 
stamp, and bricks from the temple foundations of Nineveh and Egy]3t are 
impressed with the symbol of their makers. In all civilized lands, and in 
all ages, the producer of an article of trade has placed his own mark upon 
it so that it might be known as his by all purchasers. From this came the 
term trade-mark. The exclusive right to a trade-mark is protected at com- 
mon law, but it has been found necessary in our own and other countries 
to extend further protection by special statute. 

Any one can obtaia property in a trade-mark, provided he is the first to 
apply it to any given article or class of products, and provided also that 
«uch article or product is actually one of trade or traffic, whether it be a 
newspaper, box of baking-powders, steel plow, medicine, textile fabric, or 
anything else. The fact that a certain mark has been adopted by one 
party for one kind of products does not prevent another from taking the 
same device as a trade-mark for a quite different thing. Thus, a mark 
previously used by a manufacturer of mowing-machines could be legiti- 
mately appropriated by another for steam-engines, and by a third for 
bar-iron or steel, 

A trade-mark secures to a manufacturer the advantage of whatever repu- 
tation he may gain through the superior excellence of his wares, whether 
in point of quality or cheapness. Thus trade-marks are often very valu- 
able ; they carry with them practically the good-will of the business in the 
articles to which they relate. * 

AMERICAN TRADE-MARKS, 

In this country, the registry of a trade-mark at the Patent Office affords 
protection for a period of thirty years, unless foreign registry shall expire 
at an earlier date, the same rule being followed in this case as with patents. 
But even after the expiration of this term, the trade-mark will still hold 
good at common law, and the date of registry will be proof of long user, 
and exclusive proprietorship. 

* This haf? always beei;i the case even before statute law was invoked to aid the common 
law in guardiufij property in trade-rnarks. An eniinont aiithority says of tho famons man- 
ufacturer, Wed<j:cw()od : " He i)roduced many lino pieces of work. liy moans of his sym- 
bol, he socnrod a full reward for his industry, "liis toil, his <j:onius. Ilo'could safely roly on 
this trade-mark to ])oint out to tho i)ooi)lo of all couutrios the Ljoods in wliioh ho so" sucooss- 
fully combined tho useful, the ornamental and the ini;enious.'' It is safe to say that there 
are hundreds of trade-marks in existence in this country wortii from ten thou'sand to live 
hundred thousand dollars each. 



IS 

As our trade-mark legislation is of recent date (July 8, 1870), the special 
procedure requisite to secure complete Government protection has been 
and still is unfamiliar to many agents experienced more or less in ordinary 
patent practice. In making the application, the applicant invites the ex- 
amination of the case upon its merits, and the query quite frequently arises 
whether the device claimed can be properly or legally adopted as a trade- 
mark. In meeting the objections, if such should occur, "sometimes a 
course of special pleading is pursued, until the essential questions are met. 
The application papers serve as a declaration, in lack of defense to which 
(by tlie Office) the claim is passed for issue. He who has made himself 
familiar with the science of special pleading at common law — httle studied 
nowadays for practical use as an aid to mental discipline, and as a system 
of logical dissolution of the issues of a strictly legal controversary — will 
have an advantage." 

Office of the Iron Age, 
A Weekly Review of the Hardware and Metal Trades, 
David "\Yillia:ms, Publisher, 80 Beekman Street. 

James A. Whitney, New York : 

Dear Sir : Allow me to thank you for the entirely satisfactory way in 
which you procured the registry of my trade-mark. I am particularly 
pleased with its being allowed without any amendment in the specification, 
which was, in my opinion, very ably drawn. I shall take pleasure in re- 
commending your agency to others desiring to have their trade-marks pro- 
tected. Yours very truly, 

David TVilliams. 

foreig-x trade-marks. 

To be valid in other countries, trade-marks must be registered according 
to the laws thereof ; in all cases where manufactured articles are likely to 
find a market abroad, foreign trade-marks on them should be secured. 

CAXADIAX TRADE -:MARKS. 

The Canadian "Trade-mark, and Design Act of 1868" is extremely lib- 
eral in its protection of trade-marks and "industrial designs, as well as se- 
vere on infringements upon the same. Registry must be made in the de- 
partment of the Minister of Agriculture, who has general charge of affairs 
relating to patents, etc., for the Dominion. The cost, agency fees included, 
of securing a trade-mark in Canada is $25. 

AUSTRO-HUITGARIAJf TRADE-ifARKS. 

Americans are privileged, to secure their trade-marks in Austria and 
Hungary by virtue of the convention proclaimed June 1, 1872. Dupli- 
cate copies of these marks must be placed on record in the Patent Office at 
TTashington, and in the Chambers of Commerce and Trade in Vienna and 
Pesth. The total expense of securing a trade-mark in the Austro-Hunga- 
rian Empire is §50, gold. 

BELGL\>r TRADE-MARES. 

The treaty of July 17, 1858, enables Americans to obtain Government 
protection on their trade-marks in Belgium the same as at home. The 
trade-mark must be recorded in the office of the Tribunal of Commerce in 
Brussels. Expenses, including agency fees, 840, gold. 



19 



FRENCH TRADE-MARKS, 



The protection of United States trade-marks in France rests upon the 
provisions of the treaty made between the two countries April 16, 1869. 
The proceedings are essentially the same as in Belgium. Total cost, in 
gold, $45. 



GERMAN TRADE-MARKS. 



The treaty with Germany, dated June 1, 1872, allows citizens of the 
United States the same protection on trade-marks that is accorded to those 
of the German Empire. The expense varies from $40 to $60, gold. 



RUSSIAN TRADE-MARKS. 



On January 27, 1868, an article additional to a former treaty with Rus- 
sia provided for reciprocity in trade-marks, which, in the latter country, 
are protected by Government registry at St. Petersburg. The total cost of 
a Russian trade-mark is $55, gold. 



BRITISH TRADE-MARKS. 

A recent statute provides for the registry of trade-marks in Great Britain. 
The practice is somewhat involved, but any trade-mark, to be properly sus- 
tained, must be registered. The expense is $75, gold. 

NOTE. 

In designing a trade-mark, it is best to make it as striking and simple as 
possible, whether by coining anew word, adopting some device previously 
used for a different class of products, combining a word or name and a pic- 
torial emblem, or providing a figure or symbol wholly new. As previously 
remarked, the value of a trade-mark is frequently very great, and products 
largely advertised or meeting with profitable sale should always be pro- 
tected by them in all countries where either a present or prospective market 
is to be found. 

THE EXAMINATION OF PATENTS, 

to ascertain whether they are properly drawn or not ; whether the descrip- 
tion tallies with the claims ; whether the claims are definite enough to par- 
ticularly designate the invention, or broad enough to embrace the whole ; 
and generally whether there be anything in the form or substance of the 
specification to narrow or invalidate the patent — all this is important in 
view of any legal proceedings present or likely to occur. Every patentee 
should be sure that his letters-patent are impregnable before subjecting 
them to the scrutiny of a court. 

The question of whether one invention infringes upon another is frequent 
and important, but can commonly bo decided by a careful comparison of 
the device alleged to infringe with tliat described in the letters-]i:itent. 
Quite often the solution of the matter turns on the query whether one 
element of a combination is tlie mechanical e(piivalent of an a])parently 
modified element of a combination claimed to be dilTerent. To determine 
this requires the exercise of sound scientific and mechanical judgment, and 
a knowiedge of wliat the judicial authorities of this country and of Great 
Britain (which latter furnishes many of the precedents folloWed in Amer- 
ican juris] )rudence) have (hx-ided in cases of this character. 

In many cases, it is desirable to ascertain to what extent, if any, inventors 
have been anticipated in past times. Such an investigation involves diligent 



20 

search in the patent records of this and other countries ; in old technical 
publications, and published accounts of industries. Such examinations, 
to be of any value at all, must be most thoroughly conducted, and, when 
this is the case, often secure the most important results to patentees and 
manufacturers. 

The fee for business of this character must in each particular instance 
depend upon the extent and character of the labor involved. In this 
agency, the client receives in all cases the most diligent and earnest effort 
in his behalf, and charges are in no case excessive. 

OPINIONS OF THE PRESS. 

''As announced in a recent number of the TelegrapTier, Mr. James A. 
Whitnej', who has for several years edited the American Artisan, has 
retired from that position. Mr. Whitney is the President of the New 
York Society of Practical Engineering, and is intimately associated with 
the mechanical and engineering interests of the country. He has opened 
an office in this city, and offers his services in securing American and 
foreign patents, as an expert in patent suits, in conducting investigations in 
English, French, and American industrial records and technical publica- 
tions, in examining and reporting upon new processes and machinery, 
in designing apparatus for industrial uses. We take pleasure in com- 
mending Mr. Whitney to those who may have occasion to avail themselves 
of his services. His experience as an editor of an industrial organ, and his 
familiarity with mechanical and technical matters, peculiarly qualify him 
for his new business, and we have no doubt but those who may confide 
their interests to him will find it to their advantage to do so." — The Tele- 
grapher, New York, June 8, 1872. 

' ' Prof. James A, Whitney has established an office as expert and patent 
solicitor in this city. We commend this new patent agency to our friends, 
because we know that all business entrusted to Prof. Whitney will be 
promptly, carefully, and conscientiously attended to ; while his long, varied, 
and practical familiarity with inventions has eminently fitted him for his 
vocation. He has not only edited a technical journal for years to the satis- 
faction of the engineering public, but has prepared hundreds of specifica- 
tions for patents, and has worked with his own hands in the machine shop 
and the draughtsman's office. Inventors may therefore depend upon find- 
ing him in full accord with their interests, and posted up in all that is 
needed in the securing of full protection for their improvements." — Ameri- 
can Gas-light Journal, New York, June 17, 1872. 

"Mr. James A. Whitney has dropped the pen and become an expert in 
patent cases and consulting engineer. He has opened an office where he 
will apply his varied and extensive professional experience in the manner 
above indicated. Those who may have occasion to consult him will find 
him thoroughly conversant with the patent law, engineering, chemistry, 
machinery, and all things connected with the industrial arts. " — The Phreno- 
logical Journal, New York, July, 1872. 

''Mr. Whitney is a thorough mechanical engineer, with a valuable 
practical experience in the machine-shop, and, from his long connection 
with the editorial profession, is thoroughly familiar with the industrial 
and mechanical progress of the country, as well as with the details of im- 
provements in every department of construction. He likewise has had a 
valuable experience in the preparation of patent specifications (several 
hundred of which he prepared while in the Artisan office). As President 
of the New York Society of Practical Engineering he has been distinguished 
for his intelligent labors in forwarding the objects of that Society, and by 
education aud practice unites all the requisites for success. We take 



21 

pleasure in most cordially recommending his services to our readers, know- 
ing that whatever he undertakes will be conscientiously attended to. " — Amer- 
ican Railway Times {Boston), June 8, 1872. 



WHAT CONSTITUTES INFRINGEMENT OF PATENTS. 

From the beginning of industrial art, inventors have been open to the 
attacks of pirates seeking to appropriate to themselves the hard-earned pro- 
fits of patentees. A few decisions of the United States courts, on the ques- 
tion of what constitutes infringement, will be of interest in this connec- 
tion. 

As long ago as 1809, the meaning of the statute was clearly defined by 
Justice Washington, of Pennsylvania, in the case of Evans 'cs. Weiss, as 
follows: " The general law declares that the right to a patent belongs to 
him who is the first inventor, even before a patent is granted; therefore any 
person who, knowing that another is the first inventor, yet doubting 
whether that person will ever apply for a patent, proceeds to construct a 
machine so invented by another, acts at his peril, and with the full knowl- 
edge of the law that a subsequent patent may cut him out of the use of 
the machine thus erected." In 1813, Justice Story (Sawin ■»«. Guild) de- 
cided that, to ''constitute an infringement, the making must be to infringe 
the patent-right, and deprive the owner of the lawful rewards of his dis- 
covery." The essence of infringement was the following year stated by 
the same authority in the case of Odione vs. A¥inkley, as follows : "In an 
action, the first question for consideration is whether the machines used 
by the defendant are substantially in their principle and mode of operation 
like the plaintiff's. If so, it is an infringement to use them." 

The principle of an invention must be inferred from the claim. In the 
case of Sickles m. the Globe Manufacturing Company, Justice Grier de- 
cided that " the question of infringement has reference to what the pat- 
entee has claimed in his patent, and not to what he might have claimed if his 
specification had been more skillfully prepared." The absolute necessity of 
having specifications and claims drawn with the utmost care is pointedly 
indicated in this dictum from the Supreme Bench of the United States. 

In the suit of Richi)s. Lippincott, Justice Grier also stated that " an in- 
fringement takes place wherever a party avails himself of the invention of 
a patentee, without such a variation as will constitute a new discovery." 
In Sickles vs. Borden, Judge Nelson said: " Mere formal changes will not 
evade a patent." Justice Ingersoll, inlmlay vs. Nor. and Wore. Railroad 
Company, 1858, laid down the rule, recognized, however, long before, that 
" it is none the less an infringement of a patent because something is 
added to the means patented, even though the object or result secured by 
such other means in connection is better accomplished." 

On the other hand. Justice Story, in Whittemore -ys. Cutter, 1813, de- 
cided that "the making of a patented machine merely for philosophical ex- 
periments, or for the purpose of ascertaining the sufficiency of the machine 
to produce its described effects, is not an. infringement of the patentee's 
rights." 

During the same year. Justice Washington decided, Aiken rs. Bemis, 
that "if the machine used by the defendant differs materially from that de- 
scribed in the patent, there is not an infringement." But tins dictum 
must be received with caution. In the case cited, the patentee described 
a s;iw-set constructed of wrought-iron with steel faces; he having 
previously tried the saw-set made wiioll}'- of steel, and thrown it aside 
because of its liability to fracture. Subseciuently another inventor made 
the same set according to the al)an(lone(l iilan. and found it successful. 
The saw-set was "patented, antl this williout making the specification in 



99 



terms broad enough to cover steel also."* This is another example of the 
mischief done by carelessly written specifications. Had the inventor 
claimed a "saw-set constructed with steel faces operating substantially" 
as set forth in the descriptive portion of his specifictaion, no plea of '-'im- 
provement in the principle " would have availed the infringers, (See ante: 
the principle must be inferred from the claim.) 

In Kidd ts. Spence, Ingersoll, /., decided that "a patent for making 
bonnet-frames was not infringed by simply making the crown of a bonnet 
without the tip. A bonnet-frame includes both the crown and the tip." 
This, again, seems to have hinged upon an inherently defective specification. 
Assuming the novelty to be the same as concerns severally both crown and tip, 
a specific claim should have been made to each, and a third clause could 
have covered the two features in combination. The making or using of 
either feature would then beyond a doubt have constituted an infringe- 
ment. 

COXSTRUCTIOX OF MODELS. 

The Patent Office requires a model in every case where the invention 
admits of representation in this manner. This is an onerous tax on inven- 
tors, and it is to be hoped that in time a more enlightened and liberal policy 
will prevail. But while the rule stands it must be obeyed in good faith, 
and the best method of constructing models so as to secure all the purposes 
of the office, and at the same time avoid undue expense to the inventors, is 
a matter of considerable moment. A model should fully represent the 
improvement claimed ; it should be durable ; it should be put together in 
a substantial manner, and neatly finished ; when possible, it should be a 
working model. These conditions fulfilled, it is good enough. Finely fin- 
ished brass-work and carefully polished surfaces are quite unnecessary. As 
a material, in many cases, wood is much cheaper than metal, and answers 
every purpose quite as well, especially if the gears and smaller x)arts are 
made of boxwood. Copper softened by annealing in the fire will form in 
a model those parts that would require wrought-iron in a full sized ma- 
chine. Other parts which the professional model-maker would cast in 
brass, and afterwards file slowly into shape, may be made of an alloy of 
lead and tin, or of block-tin alone. Both the alloy and the last-named 
metal melt at comparatively low temperatures, and may be cast into rough 
shapes in molds cut in pine or basswood. These rough shapes may then 
be trimmed to the size and form required by the use of a half -worn chisel 
or gouge, as the case may require, and be finished by the dexterous use of 
a pocket-knife. Models of fire-arms, cider-mills, mowing-machines, motive 
power, and many other things, have been made in this manner of soft 
metal, and have fulfilled all the requirements of the Patent Office. But it 
must be observed that it is absolutely necessary that the model should rep- 
resent accurately the entire invention claimed, and should be strong enough 
to bear considerable handling. 

COPYRIGHTS. 

Section 86 of the Act of 1870 enacts ''That any citizen of the United 
States or resident f therein who shall be the author, inventor, designer, 

* Eobb's "Patent Cases," 1854, vol. 2, p. 650. 

+ The residence must be permanent. "A person temporarily residing here, even though 
he has declared his intention of becoming a citizen, cannot take and hold a copyright " (see 
Carey vs. Collier, 56 [files' Register, 262)'. 

" One who gets others to compile a work or engrave a print is not entitled to a copyright ' ' 
(Pierpont vs. Fowle, 2 Wood & Min., ^16). 

" The assignee of a work composed by a non-resident alien cannot take a copyright for it ' ' 
(Keene vs. Wheatley, 9 American Law JRegister, 46). 

_ "Under the copj-fight act of 1831, the legal assignee of the author may take out the copy- 
ight, and it will make no difference whether he hold it as trustee for another or not " (Lit- 
le vs. Gould, 2 Blatch., 366). 
" Copyrights shall be assignable in law " (Act of 1870). 



23 

or proprietor of any book, map, chart, dramatic or musical composition, 
engraving, cut, print, photograph, or negative thereof, or of a painting, 
drawing, chromo, statue, statuary, or models or designs intended to be 
perfected as works of the fine arts, and his administrators, executors, and 
assigns, shall, upon complying with the provisions of this act, have the sole 
liberty of printing, representing, publishing, completing, executing, fin- 
ishing, and vending the same; and, in the case of a dramatic composition, 
of publicly performing or representing it, or causing it to be performed or 
represented by others ; and authors may reserve the right to dramatize or 
translate their own works." 

Copyrights are granted for a term of twenty-eight years, and may be ex- 
tended fourteen more. It will be seen from the foregoing that a copyright 
covers almost every product of mechanical skill and originative talent that 
is not embraced by patents proper, design patents, and trade-marks. The 
proceedings involved in securing a copyright are comparatively simple, but 
the rules and regulations must be observed to the very letter, or the copy- 
right is forfeited to the public. The total expense is from five to fifteen 
dollars, according to the nature of the subject to be protected, which 
^moimt should be sent with the title-page (before publication) of the work, 
if it be a book; or copy or photograph, with full description (before sale or 
public use), if coming Within the other designations indicated. 

ASSIGNMENTS AND LICENSES. 

Section 36 of the 'Act of 1870 provides that every patent or any interest 
therein shall be assignable in law by an instrument in writing ; and the 
patentee or his assigns or legal representatives may, in like manner, grant 
and convey an exclusive right under his patent to the whole or any specified 
part of the United States; and said assignment, grant, or conveyance shall 
be void as against any subsequent purchaser or mortgage for a valuable 
consideration, without notice, unless it is recorded in the Patent Office 
within three months of the date thereof. 

An assignment may be made before or after the issue of the patent, or 
before the application for a patent. If in such event the patent should 
issue to the inventor, the title would still rest in the assignee. In some 
cases where the inventor has been employed and paid for devising or per- 
fecting an invention, the implied contract will pass the title to the em- 
ployer as assignee; under circumstances other than this, an employer has 
no claim whatever upon inventions made by persons in his employ. 

"An assignor cannot, after assignment, impeach the title of his assignee " 
Wilson v. Serger, Lewis's Digest, 158). 

In order to protect the interests of the inventor, it is best to have 
licenses, permitting the practice of the invention under certain restric- 
tions, so drawn as to prevent the licensee from afterwards disputing the 
validity of the patent. The ordinary forms are not sufficient for this. 
The greatest attention to details is necessary in all instruments transfer- 
ring rights in letters-patent, and the point just indicated is worth)^ of 
note by all concerned. 

Joint owners of a patent, i.e., owners of undivided interests, can act 
independently of each other, and are not obliged to account to each other 
for profits, etc. To secure equity in such cases, their relative status 
should be clearly defined by written agreements. 

The query whether an agreement to assign all subsequent improve- 
ments, i.e., inventions not yet devised, will hold good in law, is often 
asked, and the answer is at best doubtful. The authorities cite the 
case of Ncsmitli et al. v. Calvert et al. (1 Woodbury & ]\linot, 34). as 
showing that "a contract may be made to convey a future invention 
as well as a past one, and for any iini)n)vement or piaturing of a i^ast 
one." But Hms seems the conclusion of tlie person Wlio made the digest 
rather than that of Justice Woodbury, who gave ttie decision; for the 



24 

invention in dispute was one that had already been suggested when 
the contract for future assignment was made. "The change was rather 
a further progress in the same machine than inventing a new one; 
was maturing its form without introducing any new principle." 
The bill averred distinctly that the improvements in dispute were con- 
templated at the time the contract was drawn, and, in view of proof 
to this effect, the court decided that the improvements were in law as- 
signed by the contract. The conclusion from this case is that improve- 
ments shown to actually exist in the mind of the inventor, and relating 
specifically to the invention forming the basis of the agreement, may be 
covered by the latter. To go further than this would conflict with the old 
common law maxim that one cannot sell what has no existence. A con- 
tract not to invent would be void as prejudicial to the public welfare. 

DECISIONS OF THE COURTS. 

As the number of patented inventions becomes greater, many novel 
points of law are brought up in decisions of the courts, and thus, from 
time to time, disputed questions are decided. Room can be afforded here 
only for brief mention of a very few of the numerous matters of interest 
to patentees thus passed upon, but the following are worthy of note by 
those most concerned : 

It is an acknowledged principle that, when several parts are claimed in 
combination, the omission of any one of these parts will avoid the claim. 
But there are instances in which the strict observance of this rule would 
manifestly work injustice. Such an one was involved in the case of Ren- 
wick, et al. Ts. Pond, tried before Judge Blatchf ord, June 2, 1872, and the 
nature and result of which may be inferred from the abstract of the de- 
cision arrived at on one of the points, viz. : "A claim for an arrangement 
and combination of which a cartridge is a part might be infringed simply 
by selling a firearm capable of being and designed to be used to effect the 
result of the patent by the means specified, and requiring only the addition 
of the cartridge by the purchaser." An infringer sometimes attempts to 
avoid a penalty by leaving the patented article somewhat incomplete, with 
the intention that the purchaser supply the deficiency ; but, as shown by 
the foregoing, the law justifies nothing of the kind. 

Another plan sometimes attempted by infringers is that of causing some 
irresponsible party to carry on the manufacture, and then pretending to 
purchase the patented product. In prosecuting an infringement of this 
character, it is absolutely necessary to prove actual collusion between the 
parties: but, when this is done, the scheme will fail to protect the real in- 
fringers, as witness the following from the decision of Nelson, J. , in the 
celebrated case of Tatham ts. Leroy, tried in 1849: "If the agreement 
was only colorable and entered into for the purpose of securing the profits 
of the business without assuming the responsibility for the use of the in- 
vention, then they would be liable. Aiding and assisting a person in carry- 
ing on such a business and in operating the machinery will implicate the 
parties so engaged. 

It frequently occurs, with patents of unusual merit and value, that a 
combined opposition is organized by infringers, which results in much liti- 
gation and consequent inconvenience and loss to the owners of the patent. 
Although there is no statute forbidding this, its tendency is decidedly 
against equity. Judge Story, in Woodworth vs. Shearman, in 1844, said 
that "it would seem that a combination of a number of persons to resist 
a patent approaches very near, if it does not actually reach, a criminal con- 
spiracy. 

In the recent case of Black et al. ts. Thorne et al. (relating to the patent 
of Moses Thompson for burning bagasse and wet fuel), Judge Blatchford 
held the combined resistance by the tanners to the patents to be a tribute 
to the value of the inventions, and declared himself ' ' unable to resist the- 
conclusion that the plaintiffs have fully established their case." 



25 

In the suit of Draper vs. Hudson, before Shepley, J., Marcli 1, 1873, the 
principle (settled, however, by previous (Z^'cto) was laid down that ''a pa- 
tent for an article of manufacture cannot be sustained on the ground that 
it was fabricated by new and improved machinery; it must be a new and 
improved thing itself, possessing novelty of its own, independent of the 
devices, processes, or arts by which it is produced." In this instance, 
what was claimed as a new article of manufacture was a "type-block " for 
hand-stamps, etc. , differing in no essential respects from those previously 
made by other methods. The patent was therefore held to cover only the 
machine or means whereby the devices were fabricated. Had the devices 
themselves been new and useful, there can be no doubt that they would 
have constituted valid subject-matter for a separate and independent pa- 
tent. 

The owner of an invention, worth, it may be, thousands of dollars, 
should exercise the strictest scrutiny as to whether the solicitor to whom 
he confides his interests is competent and reliable. In forming a judgment 
in such a case, the experience of others is frequently of both interest and 
value. The following, from the most extensive dealers in the country in 
paints, oils, colors, artists' materials, etc., is apropos to the matter in hand: 

Office of C. T. Ratnolds & Co., 106 and 108 Fulton St. 

New Yokk City, January 14, 1874. 
Mr. James A. Whitney: 

Dear Sir : We have to express our satisfaction with the manner in which 
you have conducted the patent business of our firm. We take especial 
pleasure in certifying to the care and skill shown in the preparation of 
our several foreign patents — British and French — and the thoroughness of 
your investigations, whenever called for, as an expert. 

Truly yours, 

C. T. Raynolds & Co. 



A PERSONAL REMINISCENCE. 

[From the Neioark Manufacturer, February, 1874.] 

We find upon our desk the first number of the News-letter, the organ 
of the successful home and foreign patent agency established by James A. 
Whitney, and issued from his offices. No. 212 Broadway, New York City. 
It is published in neat and attractive form, and its editorials on current 
matters relating to the interests of inventors and patentees should and must 
secure for it their most cordial support. Among other matters we note an 
original- portrait and biographical sketch of L. Wellman Wright, the 
venerable inventor of the first machines for making solid-headed pins, and 
of nearly half a hundred other useful improvements; also excellent editorial 
articles on "The Washington Patent Congress," " The Financial Outlook 
for Inventors," and " Breaking Dishonest Patent Agents." 

This little periodical recalls to our mind a circumstance showing the level 
head Prof. Whitney has always carried in matters relating to patents and 
patent law. Some years ago — in 1866, we think — the Commissioner of Patents 
promulgated an order that all applications for reissues should be adver- 
tised to open up each case for opposition if any antagonist of the ]Mitentee 
should elect to oppose it. This was carried into ell'ecl, but, aware of its 
evil teMdency and illegal charactei-. Prof. Whitney, who was at that time 
a confidential examiner in the American Artisan oflice, wrote a communi- 
cation to that journal setting forth the grounds of liis opinion that the 
regulation was illegal, and contraiy to justice and sound public policy. 
No attention was paid by the Patent Olllce to his nunonstraiice until a. few 
weeks thereafter, when an irate ])alentee concluded to test the matter by 



26 

an appeal to the courts. The result was that the Supreme Court of the 
District of Columbia granted an injunction restraining the Commissioner 
from publishing the applications for reissues, and that, too, on the grounds 
upon which Prof. Whitney had based his argument against the unwar 
ranted exercise of authority on the part of the Commissioner,* 

No. 93 Liberty Street, New York, N. Y. , 
February ^6, 1874. 
James A. Whitney, Esq : 

Sir : Accept my thanks for the prompt and vigorous way that you have 
managed my patent business. You filed my two American cases (Eye and 
Lung Protectors), one within two days, and the other within ten hours of 
the time I placed them in your charge; and secured both patents in a few 
days' time and with strong claims. Your system of sending applications to 
the Patent Office at once, and of attending to every case j96r5(9?i<»%, merits 
all praise. I must further express my satisfaction with the fact that you 
forwarded applications for British, French, Belgian, Bavarian and Canadian 
Patents on my improvements in less than thirty-six hours after yoa were 
instructed to go ahead. 

Yours, respectfully, 

G-eo. a. Crofutt. 

No. 220 Centre St., February 16, 1874. 
James A. Whitney : 

Dear Sir: My three United States patents secured through your 
Agency — one on carpet vise and two on implements for cutting, punching, 
and gripping metals — have pleased me very much. You have given each 
your careful attention, and succeeded admirably in giving scope and clear- 
ness to the specification and claims. 

You have also my thanks for the care and skill shown in the preparation 
of the foreign patents, 1 am aware (for I have had some experience, having 
been a practical mechanic in Scotland as well as in this country for years) 
that any blunder in a foreign case kills it, but any inventor confiding his case 
to you may rest certain that his documents will be all right. I believe a 
foreign patent on any really useful invention, properly managed, to be 
as valuable as one here. It is for this reason that I employed you to secure 
letters-patent for me in England, France and Belgium, on my improve- 
ments, and as I said before, I am more than satisfied with the way you 
have conducted my business. 

Yours, respectfully, 

Jainies Lindsay. 

Office of Amos Eank & Co. , Salem, Ohio, Nov. 20, 1874, 
James A. Whitney, Esq., 212 Broadway, New York City: 

Dear Sir : You have now procured for me six (6) patents upon the new 
article which I am manufacturing, known as Grave-Cuards, or guards for 
grave mounds, two of which are upon mechanical construction, and four 
of which are for designs — in the management of all of which you have 
shown skill and judgment of a high order, as well as a conscientious regard 
for your client's best interest, I am much pleased with the patents. 

Very respectfully yours, 

Amos Bank. 

D. Saunders' Sons, Manufacturers of Steam and GtAs- 
Fitters' Tools, Yonkers, N. Y,, Sept. 10, 1874. 
Mr. James A. Whitney : 

Dear Sir : Having received my letters-patent, I feel very thankful to 
you for the prompt and efficient manner in which you have conducted the 

* The certified MS. report of this case maybe found on page 143, vol, IV., "Book of 
Appeals," in the Record Room of the Patent Office. 



27 

business. You readily understood the working and leading points, and 
drew the specification so plain and comprehensive that I had no doubt of 
your success, I take pleasure in recommending your agency to all in- 
ventors, that cases entrusted to you will be carefully prepared and 
promptly attended to. 

Alex. Saunders. 

202 Broadway, New York, December 2, 1874. 
Mr. James A. WMtney, New York : 

Dear Sir: The patent for my "Billiard-Table Leveller" was just 
handed me by your messenger. After a hasty examination of the same, I 
take this opportunity to thank you for the prompt and satisfactory manner 
in which you have secured the allowance of my three patents. Allow me 
also to notify you that I am preparing models for some other cases, which 
I wish you to push forward for me, and I shall be ready with the first next 
week. 

Yours, etc.. 

T. J. M. Jewell. 

308 Fulton Street, New York, Feb. 15. 
James A. WMtney, Esq.: 

Dear Sir : I feel it a matter of courtesy to express my satisfaction that 
you have so promptly and successfully attended to the four patent cases 
which I have placed in your hands during the past few months. If suc- 
cess in obtaining patents with strong claims is a desirable point for paten- 
tees, I should say that you were just the one to conduct such cases. 

Yours respectfully, 

T. W. Burger. 

46 Cortlandt Street, New York, Feb. 16, 1875. 
James A. WMtney, Esq. : 

Dear Sir : The notice of the allowance of the last patent case you had 
in hand for me is at hand. You will please accept my sincere thanks for 
the prompt manner you have handled this case and the very short time it 
has been accomplished, and oblige 

Yours truly, 

Thos. S. Davis. 



EUROPEAN PATENTS IN GENERAL. 

The value of British and Continental Patents is not understood as it 
should be by American Patentees. It should always be kept in mind that 
when an invention is perfected and a market established for it in this 
country, its manufacture and sale will be just as profitable — perhaps more 
so — in several others. But it will not do to defer application for Foreign 
Patents until an invention has been made a public success here. Not only 
do some European States permit the mere introducer to secure a Patent on 
the same footing as the true Inventor, but in most of them a Patent is not 
valid if it has been made known in the country where the PaUmt is sought, 
previous to the application. It does not follow that in all cases a Patent 
may not be obtained abroad if the improvement has been ]>reviously pub- 
lished, but it is manifest that great care and (!ircums]K>ction should bV used 
lest the golden opportunity be lost. The Sewing Machine was not pat- 
ented in Germany until it was too late, and the immense German market 
was forfeited by the owners of the invention. 



28 



, VALUE OF EUROPEAN PATENTS. 

There is space here for merely the 'briefest mention of a few only of 
many illustrations of the value of European Patents. One of my clients, 
Mr. Thomas J. Sloan, the inventor of the gimlet-pointed screw, informs 
me that he realized from his Patents in Europe on that invention Three 
Hundred and Forty-Five Thousand Dollars. The celebrated French writer, 
M. Laboulaye, has recently given some examples of the money value of 
Patents in France, as follows: "The Patent on an Electric Alarm (signal 
apparatus) has been sold for Fifty Thousand Francs ; one on a Glove But- 
ton for Sixty Thousand Francs; one on an improved Hook-and-Eye, 
Seventy Thousand Francs ; one on a clasp for Port-monnaies has produced 
millions to its inventor; another on a paste for making Artificial Pearls, 
etc., has brought the inventor Fifty Thousand Francs in royalties, and the 
Patentee of a Corset made from it Five Hundred Thousand Francs ($100,- 
000) in two j^ears." Of even greater value are British Patents on good in- 
ventions properly managed. A client recently informed me that he had 
been offered Twenty Thousand Pounds, Sterling, for an improvement in 
manufacturing Illuminating Gas. The English Patent on a noted Ameri- 
can Steam Boiler of the sectional type was sold for Five Thousand Guineas. 
The most approved form of Rotary Puddling Furnace met Avith compara- 
tively little favor in this country until the British Iron-masters paid the 
inventor One Hundred and Fifty Thousand Dollars. The various Sewing 
Machine Patents, and many others, could be cited to show that Patents for 
Great Britain are to the full as valuable as those for the United States ; so 
far as relates to the manufacture of articles of traffic or commerce, to Iron 
Making, Steam Power, &c., &c., they are even more so, as the manufactur- 
ing interests are larger, comprise more wealth, and are exposed to even 
keener competition than with us. Russian Patents, although costly, are, 
for many improvements, extremely valuable, and the policy of the Russian 
government is extremely favorable towards Patentees. Various other 
European countries may, in special cases, be selected for Patents, but care 
should always be taken that the new improvement, is one adapted to the 
trade, manufactures or natural products of the country. This should be a 
universal rule, and where it is observed, a real improvement, with fair 
business skill, should be made to yield a substantial and satisfactory har- 
vest. 

CARE AND RESPONSIBILITY INVOLVED IN RELIABLE PATENT PRACTICE. 

The undersigned has not stopped at either effort or expense to secure 
every facility for the prompt and thorough transaction of all business 
placed in his hands. Only the most reliable foreign agents are employed 
to conduct the details of applications abroad : each and every case being 'pre- 
pared ly the undersigned in person, and transmitted to the foreign corre- 
spondents with instructions that the specification and claims shall not he 
changed. By this means the proper scope of the patents when obtained is 
secured, and, at the same time, every requirement of official routine during 
the progress of each case is strictly and carefully met. 

In the prosecution of applications for U. S. patents equal precautions 
are taken ; every specification and every amendment or argument required 
in the prosecution of each case is written by the undersigned in person, 
who, during the present year, will visit Washington at stated times (once or 
of tener every four weeks). By this means not onl};^ is far more accurate 
and careful attention given to each case than is possible when a local sub- 
agent is employed as a go-between betwixt the attorney and the Patent 
Office, but much time is saved, as compared with what results when cases 
are conducted, either wholly or mainly, by correspondence. 



29 



INFORMATION GRATIS? 

I have in my office all published abridgements of English and American 
patents, also every valuable authority on the laws of patents to be found 
in legal publications in our language, also translations of the patent laws 
of every country where letters patent for inventions are granted, also nu- 
merous different Cyclopedias relating to the arts and sciences, each em- 
bracing from one to forty-six volumes, and covering the period from the 
year 1752 to the present. No charge is made to inventors who wish to 
search through these records to determine for themselves the novelty of 
their inventions, which is always loroper, and in many cases, and for many 
reasons, extremely desirable. The cost of my office library, not excelled 
in completeness by that of any other patent practitioner in the country, is 
fully repaid to me by the certainty that it i)rovides all the information that 
can possibly be called for in a large, successful, and constantly increasing 
patronage from inventors and owners of patents. 

Office of John W. Sutton, Manufacturer of 

Patent Pulley Covers, 
No. 95 Liberty street, New York, July 22, 1875. 

Jas. A. Whitney, Esq., Patent Attorney, etc. : 

Dear Sir: Your note of yesterday is at hand, advising me of the Com- 
missioner's allowance of my patent for improvement in pulley covers, and 
it is an agreeable surprise. I say ''surprise," as, when I saw you ten days 
since, the examiner had rejected it upon the same grounds and gave the 
SAME references as he had given one year before, when the same claims 

were in the hands of ; and I supposed I would have to wait two 

or three months' time, and expend quite a sum of money, to appeal the 
case and carry it to a final issue. And as you have got the w^hole of the 
claims allowed in ten days, without one 'cent of extra cost, it is certainl}^ an 
agreeable surprise. Accept my thanks for your care, and my admiration 
for your skill in the preparation of the papers and the handling of the en- 
tire case ; and, I assure you, you shall have all my patent business here- 
after, and I shall recommend you to all my friends. 

Yours truly, John W. Sutton. 

57 Leonard street. New York, February 28,. 1876. 
Jas. A. Whitney, Esq. : 

Dear Sir: It has just occurred to me that, for the prompt and earnest 
efforts you have made in pushing through my four applications for patents, 
it might not be out of place to put on record my appreciation of your 
services, and to add that, realizing the many difficulties inventors have to 
struggle against in obtaining their just rights, I am not unmindful of your 
valuable aid and counsel. It affords me no little pleasure at this time to 
bear this testimony, as well as to acknowledge your skill, pluck, and de- 
termination displayed in defending my rights against the attacks of design- 
ing parties. 

With best wishes for your success and prosperity, I remain very truly 
yours, B. F. Britton. 

James A. Whitney, Esq. : 

Dear Sir : I must add my name to the many others who feel themselves 
under great obligations to you for the valuable services you have rendered 
us in procuiiiig letters-patent and in giving good counsel in matters re- 
lating to business in your line. 

Speaking for myself, I must say that in instances of procurement of 
letters-patent, and in all other business matters that have transpired be- 



30 

tween us, such as the settlement of cases of interference and infringements, 
I have found your advice very valuable, and hope to continue with you a 
pleasant business relationship. I feel assured, from your untiring energy 
and application to business, that your future will be as r(?iDlete with success 
as 3^our past, 

Yours truly, Johus J. Bate. 

New York, February 29, 1876. 

James A. Wliitney, Esq. : 

Dear Sir : Please send me word per messenger how soon I may expect 
official action in the cases you filed for me a few days ago, and hurry them 
along as fast as possible. The uniform success j'ou have had with my 
business, and the speed my applications have been acted upon, lead me to 
expect more from you than I would from any other agent. Within three 
or four years past you have had about a dozen case-s from me, besides 
foreign business, and all of them have been managed to my satisfaction. 
I have more in store for you. In the mean time, send me word as above, 
so as I can arrange some business matters accordingly. 

Yours, etc., 

Wm. H. St. John. 
315 East Thirtieth Street, 

New^ York City, Feb. 25, 1876. 



INTERFERENCES— REJECTED CASES, RE-ISSUES. 

Ixterferknces relate to cases of disputed priority of invention, and in- 
volve the utmost care and skill in the proper presentation of proofs and 
urging of legal points. Interf erenpes are usually prosecuted only with val- 
uable improvements, and the question of what constitutes a completed 
invention, what should be considered merely an experiment, what amounts 
to due diligence in perfecting an improvement, and what involves aban- 
donment of a new device to the public, are often sprung, and require to be 
met by acute analyses of the testimony and a correct appreciation of 
judicial decisions. An interference case, must, therefore, in the very 
nature of things, call for the most thorough-going attention from the first 
step to its final adjustment. 

A very large proportion of the applications met by the Patent Office with 
even second rejections, can be prosecuted to a successful issue, if properly 
prepared and presented. "While many rejections are unjust and uncalled 
for, just as many are forced upon the Examiners by the crude manner in 
which claims are frequently placed before them. lYhen an application is 
rejected, the first thing to be done is to ascertain the exact nature of the 
reference given, and if any change is necessary in the specification and 
claims, to make it; so that, morally and legally, the application ought to be 
allowed. The inventor should not ask for more than he is entitled to, and 
should not be willing to take less. The case being in proper shape, it 
should be again laid before the Examiners with a statement of, and argu- 
ment on, the points involved. A general statement is commonly not all 
that the case demands; the points of difference must be clearly set forth in 
the light of patent law and practice, and it is often necessary to quote many 
and various legal authorities bearing on the matter in hand. 

Even after a patent has been allowed it is sometimes found, that "■ owing 
to accident, inadvertence, or mistake," it may have a flaw which wholly 
invalidates it. To remedy such defects, the law provides for a re-issue. It 
is manifest that in remedying one mistake no chance should be afforded for 
a second blunder, and as applications for re-issue are, if anything, even 
more closely scrutinized than original applications, no pains should be 
spared in their preparation. 



rr\ 



31 

Inventors and patentees whose applications may be thrown into Interfer- 
ence in the Patent OflQce, who have applications rejected through other 
agencies, and those who may have reason to suppose that their patents 
should be made stronger by re-issue, will do well to call upon or correspond 
with us. 

Office of Delaware Rolling Mill, 
96 Liberty Street, New York, Feb. 16, 1876. 

Mr. James A. Whitney, 212 Broadway, N. Y. : 

Dear Sir : I think that business men should always be as ready to ex- 
press their satisfaction with an attorney when he has done well, as their 
dissatisfaction when he has not. Therefore you will allow me to say that 
I have been highly gratified with the very able and prompt manner in 
w^hich you have attended to my patent business, especially my English and 
Canadian patents. In cases where you have been retained to search rec- 
ords and give your opinion, I have found that opinion to be very sound 
and correct; without doubt it has saved me much litigation and money. 

Yours truly, 

Jacob Russell. 

Mr. James A, WMtney : 

Dear Sir : As you know, I have been an inventor for many years. I 
was acquainted with Elias Howe, A. B. Howe, Walter Hunt, J. W. 
Cochrane, and all the old inventors that have been making improvements 
for more than twenty-five years before they died, and I have been invent- 
ing all that time and taking out patents myself. It is natural that I should 
know a good deal about patent agents, for I have had so much to do with 
them. I wish I had known you long before I did — I should have been 
better off to-day. Since I became acquainted with you, last summer, I 
have brought ten American cases and some foreign business to you, 
and you have done so well as to obtain patents for me that other agents 
told me could not be got. I have other cases for you to put through for 
me, and I wish you to proceed with them just as you have with those you 
have had for me before. 

Yours respectfully, 

John McClosky. 

New York City, Feb. 26, 1876. 

14 Prospect Place, New York City, ) 
February 23, 1876. [ 

Mr. James A. WMtney : 

My Dear Sir : I have just received notice of the allowance of my latest 
patent on wood-screw machinery. This affords me an opportunity to say 
how much I feel obliged. This makes the eleventh United States patent 
you have obtained for me, exclusive of four European and one Canadian 
patent, within these twelve months, and I now may say that I am as well 
satisfied with your manner of conducting all business relative to patent 
matters as with that of any person I have come in contact with. The 
greatly-lamented C. M. Keller was exclusively my agent and counselor for 
thirty years. Yours truly, 

Thomas J. Sloan. 

212 Broadway, Office of Knox " The Hatter," ) 
New York, February 24, 1876. \ 

Jas. A. Whitney, Esq. : 

Dear Sir: I wish to express my great satisfaction as to the prompt and 
speedy manner in which you have pushed my patents. I assure you that 
the slightest delay on your part would have occasioned me serious disad- 



32 

vantage in my plans. During my whole business experience of over thirty 
years I have never had any of mj' patents attended to with such promptness 
and despatch. Assuring you that whatever patent business I have in future 
shall be placed in your hands, 

I remain, very respectfully, 

C. Kxox. 

Mr. James A. Wliitney : 

Dear Sir : I am delighted at receiving notice of allowance of patent on 
my improvement in screws, although it is onl}^ Avhat I expected ; for every 
applicatiou I have made through you — not less than ten within the past 
three or four months — has been managed to my entire satisfaction, and I 
always rest secure M'ith a case in your hands, as I know everything will be 
done' that can be done to secure me protection by a broad and valid patent. 
Your continual success justifies me in this confidence. You may be sure 
of all my business, and of all I can influence to come to your office. 

Yours respectfully, Edwin A. Lela2sD. 

40 Akn" Street, jSTew York City, 
February 24, 1876. 

Mechaktcsville, Saratoga Co., N. Y., } 
April 18, 18T6. f 

Mr. James A. Whitney : 

Dear Sir: I am much pleased with your management of my two appli- 
cations for patents, burglar proof safe, and time lock for safes. They 
were put thi'ough quickly, and with good strong claims. In fact your way 
of doing business has been extremely satisfactory to me every way. I 
shall have more for you to do before long. 

Truly your friend, 

W. L. Potteb. 

GERMAX PATENTS. 

One patent now embraces the whole of Germany, having a population of 
about forty-three millions. Infringements are liable to severe and exceptional, 
punishment. The longest term is for fifteen years The expense, one hun- 
dred and twenty dollars, gold. 



In re-printing the above, we have sought to place before inventors aad 
others interested in Patents, Trademarks, etc., a variety of information 
relating to the different phases of patent practice in which an inventor 
and intending patentee may be presumed to l6e interested. Perhaps, 
greater symmetry would have been given to the re-publication by re- 
writing the whole, but we have preferred that, aside from changes ren- 
dered necessary by modifications in the law and practice of the Patent 
Office, it should be given in substantially the same form as 
when first issued. During the time we have been engaged in 
patent practice, our professional business each succeeding year has been 
double that of the year preceding, and a success thus assured is the best 
guarantee of the thoroughness of our methods, and the satisfaction 
afforded to our clients. Confining ourself exclusively to patent, trade- 
mark and copyright law and Patent Office practice, we assure our clients 
of the utmost fidelity to their interests, and of all the thoroughness, skill, 
and efficienc}^ that deep study and long experience can give. 

JAMES A. WHITNEY. 

213 Broadway, New York City. 



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